System Evergreen v. Concrete Systems

Opinion

System Evergreen v . Concrete Systems CV-94-484-M 08/26/96 UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

System Evergreen, A.G. and Michie Corporation, Plaintiffs v. Civil N o . 94-484-M

Concrete Systems, Inc., Cleco Corporation, and Methuen Construction Co., Inc., Defendants

O R D E R

System Evergreen, A.G. and Michie Corporation seek a

permanent injunction against Concrete Systems, Inc., Cleco

Corporation, and Methuen Construction Co., enjoining them from

infringing U.S. Patent N o . 4,293,245 (the "'245 patent"). System

Evergreen is the assignee of the '245 patent, which was

originally issued to Felix Jaecklin on October 6, 1981. The '245

patent contains 27 claims (one independent and 26 dependent),

describing an earth-filled structural system, composed of

stackable concrete units which can be used as a retaining wall or

free-standing sound barrier. That structure is also apparently

designed to support the growth of vegetation, thereby making it

both functional and aesthetically pleasing. Michie Corporation manufactures and sells precast concrete products and is the

exclusive licensee in New Hampshire under the '245 patent.

Concrete Systems manufactures and sells the allegedly

infringing product, an earth-filled, concrete wall system known as the Eco-Wal. Cleco Corporation manufactures and sell molds

for the manufacture of precast concrete forms. The remaining

defendant, Methuen Construction, purchased at least one Eco-Wal

system and then, in turn, sold it to the State of New Hampshire.

System Evergreen and Michie Corporation (collectively, "System

Evergreen") allege that the three defendants willfully infringed

the '245 patent by manufacturing, selling, and using the Eco-Wal.

Pending before the court are the parties' cross motions for

summary judgment. System Evergreen seeks judgment as a matter of

law with regard to its claim that defendants willfully infringed

the '245 patent. Defendants, on the other hand, seek judgment as

a matter of law with regard to their claims that the '245 patent

is invalid and, even if valid, that the Eco-Wal does not

infringe. The parties have also submitted motions in limine, by

which each seeks to preclude the introduction of certain

testimony by its opponent's expert.

2 Standard of Review

Summary judgment is proper "if pleadings, depositions,

answers to interrogatories, and admissions on file, together with

the affidavits, if any, show that there is no genuine issue as to

any material fact and that the moving party is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(c). A material

fact "is one `that might affect the outcome of the suit under the

governing law.'" United States v . One Parcel of Real Property

with Bldgs., 960 F.2d 2 0 0 , 204 (1st Cir. 1992) (quoting Anderson

v . Liberty Lobby, Inc., 477 U.S. 2 4 2 , 248 (1986)). The moving

party has the burden of demonstrating the absence of a genuine

issue of material fact for trial. Anderson, 477 U.S. at 256.

The party opposing the motion must set forth specific facts

showing that there remains a genuine issue for trial,

demonstrating "some factual disagreement sufficient to deflect

brevis disposition." Mesnick v . General Electric Co., 950 F.2d

816, 822 (1st Cir. 1991), cert. denied, 504 U.S. 985 (1992).

That burden is discharged only if the cited disagreement relates

to a genuine issue of material fact. Wynne v . Tufts University

School of Medicine, 976 F.2d 7 9 1 , 794 (1st Cir. 1992), cert.

denied, 507 U.S. 1030 (1993).

3 In order to determine whether the defendants have infringed

the '245 patent, the court must engage in a two-step inquiry.

First, it must determine the scope of the patented invention, as

defined by the patent's claims. That determination is a question

of law, which must be resolved exclusively by the court. Markman

v . Westview Instruments, Inc., 116 S.Ct. 1384, 1393-96 (1996).

Next, the court must resolve a factual question: whether the

allegedly infringing device falls within the scope of the

patented invention. Carrol Touch, Inc. v . Electro Mechanical

Systems, Inc., 15 F.3d 1573, 1577 (Fed. Cir. 1993). The accused

devise infringes a claim if it embodies every limitation of the

claim, either literally or by an equivalent. Read Corp. v .

Portec, Inc., 970 F.2d 816, 821 (Fed. Cir. 1992).

This latter determination -- whether the claim covers the

accused device -- has been described as "the ultimate

determination of infringement" and, because it is an issue of

fact, "should be approached with great care by the district

court" when ruling on a motion for summary judgment. Palumbo v .

Don-Joy Co., 762 F.2d 969, 974 (Fed. Cir. 1985), overruled on

other grounds by, Markman v . Westview Instruments, Inc., 52 F.3d

at 977. And, even though the former determination --

4 construction of the patent's claims -- is a question of law, it

may require the court to resolve certain predicate factual

issues.

As discussed more fully below, this case involves not only a material factual dispute — whether the Eco-Wal infringes System

Evergreen's patent — but also involves a legitimate factual

dispute regarding the scope of the '245 patent's claims. Based

upon the record presently before the court, it is impossible to

resolve those disputed material factual issues and, therefore,

impossible to determine the proper interpretation of the scope of

the '245 patent and, in turn, whether the Eco-Wal infringes i t .

Accordingly, neither party is entitled to summary judgment.

Discussion

I. The '245 Patent.

Claim 1 of the '245 patent reads:

A structural system for the construction of walls comprising a framework consisting of solid frame elements and being filled with earth material, said frame elements extending in at least one plane and having at least one support area on at least one side, said frame elements further including at least one longitudinal beam having a cross-section with at least one portion thereof arranged at an acute angle against the main plane of the frame or slab, the upper surface

5 thereof forming a substantially flat support for said earth material, at least one such longitudinal beam being located at the front side of said wall and having an upper front edge portion being positioned at a greater height compared with said flat support and forming a board for retaining a portion of said earth material resting on said flat support, the system further including holes extending at least partly vertically through said framework and distance elements between at least two of said frame or slab elements which are positioned one above the other such that the earth material at least partially filling said vertically extending openings forms at least one sloped surface extending at least partly through the scope between said frame of slab elements positioned one above the other.

Claim 1 of the '245 patent (emphasis added).

Defendants, through their expert, assert that the "holes"

referenced in claim 1 are designed to receive bolts, dowels, or

reinforcing rods, thereby tying each individual component of the

Evergreen Retaining Wall into the units which are located above

and below i t . This feature, defendants claim, is designed to

insure stability and prevent the units from sliding when exposed

to lateral pressure from the earth located behind the wall.

Defendants claim that the Eco-Wal does not infringe the '245

patent because it does not employ the "holes" recited in claim 1

nor does it rely upon reinforcing rods, dowels, or bolts for

attaining structural stability. The individual components of the

6 Eco-Wal are simply stacked on top of each other. And, while the

units do include a "frame element locating key and several

locating key pockets," Defendants Memorandum in Support of

Summary Judgment at 5 , those features are designed exclusively to

ensure that each of the components of the Eco-Wal is properly

aligned when the wall is assembled and installed. They do not,

say defendants, contribute to the overall structural strength or

integrity of the Eco-Wal.

Defendants further claim that the presence of such "holes"

and the use of reinforcing bars, rods, or dowels is an essential

limitation of claim 1 of the '245 patent. In fact, they argue

that the existence of that method of reinforcement is what

distinguishes the '245 patent from prior art and, if the patent

is read in a manner that does not include the holes and

reinforcing bars, it is invalid.

Plaintiffs, on the other hand, advance a different

interpretation of the word "holes," as that term is employed in

claim 1 . They argue that the term "holes" in claim 1 refers to

the "vertically extending openings," into which the fill

materials, not bolts, dowels, or steel bars, are placed. Thus,

7 plaintiffs argue that the terms "opening" and "hole" are used

interchangeably and refer to the cavity in each structural

element into which solid fill is placed. They conclude,

therefore, that the lack of "holes" and dowels, reinforcing rods,

and/or bolts in the accused product is irrelevant and does not

preclude a finding of infringement.

At this juncture, the evidence in support of the parties'

respective interpretations of claim 1 (although not well

developed) is essentially in equipoise. Thus, there remains a

genuine evidentiary conflict regarding the claim's proper

interpretation and summary judgment is inappropriate. Johnson v .

IVAC Corp., 885 F.2d 1574, 1579-80 (Fed. Cir. 1989). Likewise,

there remains a genuine issue of material fact regarding

infringement, thereby precluding the granting of either party's

motion for summary judgment.

II. The Motions in Limine.

The primary purpose of a motion in limine is to prevent

unfair prejudice at trial by obtaining a definitive ruling on the

admissibility of certain evidence at the outset, thereby

preventing the non-moving party from referring to inadmissible

8 and/or inappropriately prejudicial evidence in an opening

statement or eliciting such evidence from a witness. In re

Wyoming Tight Sands Antitrust Cases, N o . 85-2349, 1990 U.S. Dist.

LEXIS 13576 at * 8 (D.Kan. Sept. 6, 1990). Of particular concern

is the preclusion of plainly inadmissible evidence which, because

of its nature, would undeniably prejudice a jury or taint a trial

in such a profound way that a limiting instruction from the court

would be of little or no value.

Nevertheless, evidence should not be excluded in limine

unless it is clearly inadmissible on all potential grounds

because, in the context of a trial, evidence which is

inadmissible for one purpose may be admissible for another.

Middleby Corp. v . Hussmann Corporation, N o . 90-C-2744, 1993 U.S.

Dist. LEXIS 6150 at * 2-3 (N.D.Ill. May 5 , 1993); Estate of Carey

v . Hy-Temp Mfg., Inc., N o . 82-C-7171, 1991 U.S. Dist. LEXIS 11475

at * 2 (N.D. Ill. August 1 6 , 1991). Therefore, the court will

ordinarily defer ruling on the admissibility of evidence until

trial, so that it may resolve questions of foundation, relevancy,

and potential prejudice in proper context.

9 Here, the parties respective motions in limine are denied.

Questions concerning an expert's area(s) of expertise, whether he

or she is skilled in the arts relevant to this proceeding, and

whether (or to what degree) an expert may testify on matters

touching upon questions of law ultimately to be determined by the

court are all more appropriately addressed in the context of

trial. Of course, denial of the parties' motions in limine to

exclude certain expert testimony at trial does not necessarily

mean that all such testimony will be admitted at trial; a court

may deny the motion simply because it is unable or unwilling to

rule on the admissibility of the evidence out of the context of a

trial. Middleby Corporation v . Hussmann Corporation, supra, at *

2. Accordingly, the advance rulings on the admissibility of

evidence made by the Court in this order are subject to review

upon proper motion or objection by the parties at trial.

Conclusion

For the foregoing reasons plaintiffs' motion for summary

judgment (document n o . 52) is denied, defendants' motion for

summary judgment (document n o . 61) is denied, plaintiffs' motion

in limine with respect to certain testimony of defendants' patent

law expert (document n o . 53) is denied, and defendants' motion in

10 limine concerning trial testimony of Felix Jaecklin (document n o .

49) is denied.

SO ORDERED.

Steven J. McAuliffe United States District Judge

August 2 6 , 1996

cc: Steven J. Grossman, Esq. Edmund J. Boutin, Esq. Daniel J. Bourque, Esq.